WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Joseph Schlessinger, Ph.D. v. PrivacyP / Harold O Connor, JS Players Association Case No. D2009-0695 1. The Parties
The Complainant is Joseph Schlessinger, Ph.D. of United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is PrivacyP / Harold O Connor, JS Players Association of the Netherlands and Switzerland, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2009. On May 28, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (Directi) a request for registrar verification in connection with the disputed domain name. On May 29, 2009, Directi transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Directi did not answer all the questions put by the Center in its request for registrar verification and did not confirm as requested that the disputed domain name had been locked. The Center sent further requests to Directi for the missing information on June 3 and 5, 2009. On June 8, 2009 Directi replied with the missing information and stated that the disputed domain name was locked. The Center sent an email communication to the Complainant on June 3, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on June 8, 2009 and an amendment to the Amended Complaint on June 9, 2009. The Center verified that the Amended Complaint together with the amendment to the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 7, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The facts about the Complainant are taken from information provided by the Complainant.
Dr. Joseph Schlessinger is a natural person, being the William H. Prusoff Professor, and Chairman of the Department of Pharmacology, at Yale University School of Medicine, United States. He has a distinguished academic history and has published (often jointly) 473 refereed academic publications between 1970 and 2009. In 2003, The Guardian newspaper (United Kingdom of Great Britain and Northern Ireland) ranked him 14th in its list of the “Giants of Science.” He is a university professor, lecturer, wider speaker, consultant, book author, and has served on the editorial boards of a number of scientific journals.
Nothing is known about the Respondent except that apparently on September 16, 2008 he registered the disputed domain name and has opened a corresponding website containing a photograph of the Complainant and text making direct references to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant's extensive contentions include the following.
The Complainant submits a considerable body of documentation in support of his contention that he is a scientist of international renown. Included are: a list ranking him among 25 leading scientists, published in the Guardian; a list of 20 professional honours received; a list of publications; a list of 13 editorial board memberships; reference to him in a Science Watch article about citation superstars; mention in a New York Times article about the citation of scientific papers; a list of named lectures he has delivered (e.g., the Harvey Lecture); ten pages of Google results for “Joseph Schlessinger”, mostly about the Complainant; and an assortment of print or on-line articles about his work on cancer cell physiology, related drugs and associated business ventures.
The Complainant contends that his personal name JOSEPH SCHLESSINGER has acquired distinctiveness and that he has established substantial common law rights in it. The name JOSEPH SCHLESSINGER has worldwide recognition flowing from his use of it in writings, lectures and consulting services.
It is contended that common law trademark rights in a personal name can be established by showing use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name JOSEPH SCHLESSINGER has acquired secondary meaning. It is submitted, with citations, that several UDRP panels have held that the personal names of authors fall within the Policy as protectable marks, and that the Complainant has authored several books and many articles.
The Complainant further contends that the disputed domain name is identical or confusingly similar to the personal name and mark in which the Complainant has rights. The disputed domain name is identical to the Complainant's personal name and mark with the addition of “.com”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, the Respondent has never been commonly known by the disputed domain name. The Respondent has not used or made demonstrable preparations to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the mark at issue. The website impersonates the Complainant and it has been observed in a previous UDRP decision that it is difficult to see how impersonating someone else can be either fair or legitimate.
The Complainant contends that the website of the disputed domain name contains critical and defamatory material about the Complainant and thus comes under the recognised category of a criticism website. The Complainant submits, with extensive citations of previous UDRP decisions, that (at least in disputes remote from “expansive interpretations of United States First Amendment”) panels have found that any right that may exist to criticise does not extend to the right to register a domain name identical or confusingly similar to a trademark. Even where a criticism site is used legitimately and non-commercially, there should be indicators in the domain name that it is a criticism site.
The Complainant says that the disputed domain name leads to a website that creates a false association with the Complainant. The website is substantially similar in appearance to the Complainant's profile on the website for the Department of Pharmacology at the Yale School of Medicine, featuring the same photograph of the Complainant of which copyright is held by Yale University. The heading “Joseph Schlessinger's News Biography” misleads the public into the belief that the Respondent's website is endorsed by the Complainant.
The Complainant contends that the Respondent has tried to conceal his or her identity by the use of a proxy service, which failed to disclose the underlying registrant until after the filing of the original Complaint. The registrant contact details finally revealed appear not to be authentic as they correspond to the Swissotel Metropole Geneva and a disconnected telephone number. The disputed domain name is registered through a registrar in India and uses a web hosting service in Malaysia, which the Complainant contends is done for obfuscation and to avoid a claim for defamation. This is further evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. Given the content of the Respondent's website he must have had actual knowledge of the Complainant's name and renown. The content of the website demonstrates that the Respondent registered the disputed domain name with a bad faith intent to defame the Complainant and therefore to cause serious disruption and damage to the Complainant's business and activities.
Furthermore it is contended that the disputed domain name is used in bad faith. The Respondent has attempted to deceive Internet users by creating a false association of the website with the Complainant. Visitors may not realise that they are visiting a site critical of the Complainant until they reach the second paragraph of text. The website is not objectively critical of the Complainant but contains false, inflammatory statements that impugn the Complainant's character and reputation. The registrant has gone to great lengths to do this under a cloak of anonymity.
The Complainant says that the Respondent's registration of the disputed domain name disrupts the Complainant's business by depriving the Complainant of the right to use the disputed domain name to host a website in connection with his professional activities.
A number of previous UDRP decisions have been cited that the Complainant considers should be treated as precedent in this case.
By way of remedy the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant is required by paragraph 3(b)(v) of the Rules to provide all contact information about the Respondent known to the Complainant. It may further be noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them”. The Center is required by paragraph 2 of the Rules to employ reasonably-available means calculated to achieve actual notice of the Complaint to the Respondent. Documents sent to the Respondent's addresses in the Netherlands and Switzerland were nevertheless returned as undeliverable. The Panel is satisfied that the Center has exercised the utmost care and has done everything required in order to attempt to provide the Respondent with notice of the Complaint as required by paragraph 2 of the Rules. The Panel further notes the stern words of the Panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703, as to the consequences for a Respondent if they should fail to provide accurate contact details. A. Identical or Confusingly Similar
In the terms of paragraph 4(a)(i) of the Policy above, it is necessary for the Complainant to establish that he has a protectable mark. The Complainant does not claim to have a registered trademark for his personal name JOSEPH SCHLESSINGER but asserts common law rights on the basis that he is famous in the scientific community and his name is well-known. Furthermore he is recognised as an author, and in commerce as a consultant and participant in various biotechnology enterprises.
The Panel is mindful that the function of the UDRP is to resolve disputes of what amount to abusive registration of a domain name as distinct from trademark disputes per se. A person does not necessarily have preemptive rights in their personal name, the matter depending upon the facts. Conversely a person through the use of their name may accumulate considerable recognition and protectable secondary rights, without the name having been registered as a trademark (Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235).
In the present case the Panel accepts that the Complainant is a person of considerable academic stature who has acquired ample secondary rights in his personal name, particularly in the fields of scientific discovery, development and authorship. Within the meaning of the Policy the Panel finds on the facts that the Complainant has rights in the name and mark JOSEPH SCHLESSINGER.
It is necessary for the Complainant to prove that the disputed domain name is identical or confusingly similar to the mark in which he has rights. The disputed domain name is , comprising the Complainant's mark in full and “.com”. Punctuation and the capitalisation of characters are typically of no consequence in domain names (as in the present context) and the indispensable gTLD directory “.com” or equivalent is conventionally disregarded in the determination of confusing similarity. The Panel finds the disputed domain name to be identical to a mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name. As conceded by the Complainant, the proving of this negative fact is conventionally met by stating a prima facie case that the Respondent may refute in the terms of paragraph 4(c) of the Policy or otherwise.
In anticipation of any such defences, the Complainant addresses paragraph 4(c)(ii) of the Policy by pointing out that the purported identity eventually disclosed by the Registrar is Harold O Connor and that there is no evidence on the record he has been known as JOSEPH SCHLESSINGER.
In the terms of paragraph 4(c)(i) of the Policy the Complainant says that the corresponding website conducts no bona fide business but is in fact a criticism site with defamatory content.
In the terms of paragraph 4(c)(iii) of the Policy the Complainant says that the use of the website is not fair, as would be required under the Policy, because again, it is a criticism site that in the Complainant's view exploits the Complainant's name and is dressed up to appear initially legitimate.
The Panel accepts that the Complainant has established a prima facie case within the terms of paragraph 4(a)(ii) of the Policy. The Respondent had the opportunity to refute the prima facie case within the terms of paragraph 4(c) of the Policy or in any other way acceptable to the Panel, but has made no reply. The Respondent could perhaps be said to offer a service, whereby he tables his comments about the Complainant. But by the Respondent's use of the Complainant's mark in full and in isolation in the domain name without authority, such use is neither bona fide nor fair in the view of the Panel. It does not appear to be realistically possible that the Respondent could claim to be commonly known as “Joseph Schlessinger”. In the present case, the Respondent may well be entitled to express its opinion about the Complainant on a website, but in the Panel's view such entitlement does not extend here to a right or legitimate interest under the Policy in doing so through a domain name that is identical and clearly confusingly similar to the Complainant's trademark. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Keeping in mind that it is for the Complainant to produce the evidence, it is not abundantly evident how the above paragraphs 4(b)(i), (ii) and (iv) are directly applicable, which is not to say that paragraph 4(b) is inapplicable. Although the components of paragraph 4(b) of the Policy have sometimes been interpreted more widely, in general terms clause (i) is applicable where the Respondent has registered the disputed domain name primarily in order to sell for a profit; clause (ii) requires a pattern of blocking registrations; clause (iii) requires that the Complainant's business may be undermined by the Respondent's website (which may be applicable to the present case); and clause (iv) requires that the Respondent attempt to divert the Complainant's potential clients to a conflicting website for commercial gain.
The criteria of paragraph 4(b) of the Policy are, however, merely illustrative and bad faith may be found alternatively.
Taking an overview of the Respondent's activity, the Panel notes that the Complainant is an author on some 473 published academic works extending to many thousands of pages in total and has been instrumental in the progression of several different biotechnology companies. He has an extensive history of academic leadership and scholarship in a prominent American university. Nevertheless, the Respondent's website in the space of only three pages ignores most of the positive dimensions of the Complainant's stature and concentrates almost exclusively on two uncomplimentary (and contested) allegations distilled out of the Complainant's life. Likewise these negative aspects predominate in the keywords supplied for the attraction of search engine hits.
The Panel recognises the principles of freedom of speech and is not in a position here to assess the veracity or otherwise of the Respondent's allegations or, on the other hand, whether the purported facts may otherwise be legitimately in the public domain. The key point is that the Respondent's website posted at a domain name identical to the Complainant's mark is targeted specifically at the Complainant's name and mark and uses the domain name to focus on the denigration of the Complainant. The risk of, at the very least, initial interest confusion between the domain name and the Complainant is self-evident. Why has the Respondent done this, seemingly under a cloak of anonymity and, by any reasonable interpretation, from a self-evidently false address?
As previously intimated, in this Panel's view the Respondent has no conceivable right or legitimate interest in the disputed domain name. Having regard to all the available facts, in the absence of a Response and on the balance of probabilities, the Panel finds it to be more probable than not that the Respondent acquired the disputed domain name, and instituted an uncomplimentary website, in the expectation that the Complainant might initiate negotiations with a view to buying it. There is no evidence that the Complainant considered any such resolution. On the contrary, in choosing to institute proceedings against the Respondent through the UDRP, the Complainant has openly resurrected matters past. Taking into account also the Respondent's determined efforts to avoid identification, and without making a finding under specifically paragraph 4(b)(i) of the Policy, the Panel nevertheless finds bad faith by the Respondent to be proven in the general terms of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b)(iii) of the Policy (above) is more directly applicable. In the context of that paragraph, the word “competitor” has in some cases been widely interpreted (Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279) and this Panel is satisfied that the Respondent is a competitor of the Complainant within the meaning of the Policy. The word “business” is widely defined as “what keeps one busy or concerns one, one's occupation or affairs...” (Pocket Oxford Dictionary). Inevitably the Respondent's activity with the disputed domain name, regardless of the truth or otherwise of the content of the website, amounts to having registered and used it primarily for the purpose of disrupting the business of the Complainant. The Panel additionally finds bad faith registration and use by the Respondent to be proven in the terms of paragraph 4(b)(iii) of the Policy.
It must be emphasised that the Panel's findings of bad faith by the Respondent take no view as to the validity of the allegations contained of the Respondent's website. Regardless of how benign or otherwise the material, the over-riding consideration in this Panel's view is that the Respondent's undoubted freedom of speech within the law, unfettered as it is except by his ability to pay for any possible consequences, does not grant him authority to register a domain name identical and clearly confusingly similar to the Complainant's mark and use it to point to a website clearly derogatory of the Complainant's mark. 7. Matter of Concern – Domain Name Lock
The Panel is concerned at the period of time taken by the registrar Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR, from the date of notification to it of the Complaint on May 28, 2009 until June 8, 2009, to confirm that the disputed domain name had been locked. This amounts to a period of eight business days inclusive (without allowing for local national holidays of which the Panel may be unaware). This is an unacceptable delay for which no explanation was offered, and a matter into which ICANN may wish to look further. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: July 21, 2009
Full & Egal Universal Law Academy